06 - Withdrawal of abandonment based on failure to receive an office action

Deciding Office: Office of Petitions

The criteria for a grantable petition requesting withdrawal of abandonment based on failure to receive an Office action is set forth in MPEP § 711.03(c)(I)(A). The petition should be filed under 37 CFR 1.181.

A petition to withdraw the holding of abandonment based on failure to receive an office action must be accompanied by a showing to establish petitioner's failure to receive the office action.

For practitioners, the showing must consist of the following:

(1) a statement from the practitioner describing the system used for recording an Office action received at the correspondence address of record with the USPTO, such statement should address: (a) the reliability of the docketing system and (b) the contents of the docketing system records, such as the application number, attorney docket number, the mail date of the Office action, and the due date for the response;

(2) a statement that the Office action was not received at the correspondence address of record;

(3) a statement that a search of the practitioner’s record(s), including any file jacket or the equivalent, and the application contents, indicates that the Office action was not received; and

(4) a copy of the record(s) used by the practitioner where the non-received Office action would have been entered had it been received. These records must include a master docket report for the firm. For example, if a three month period for reply was set in the nonreceived Office action, a copy of the master docket report showing all replies docketed for a date three months from the mail date of the nonreceived Office action must be submitted as documentary proof of nonreceipt of the Office action. If no such master docket exists, the practitioner must so state and provide other evidence such as, but not limited to, the following: the application file jacket; incoming mail log; calendar; reminder system; or the individual docket record for the application in question.

For pro se applicants, the showing must consist of the following:

(1) a statement explaining the system for keeping track of patent matters, the manner in which applicant receives mail from the USPTO, maintains files for patent matters, and treats mail received for such matters, this statement should include: (a) where petitioner keeps the correspondence; (b) where due dates are recorded; and (c) how petitioner knows replies are due, in essence, the petitioner must explain how he reminds himself of response due dates and shows that the due date for an Office action was not entered into that system.;

(2) any available documentary evidence of the mail received, covering a reasonable period after the mailing date of an Office action, to demonstrate non-receipt of an Office action;

(3) copies of any records or other methods, which could serve as a reminder of the due date for a response to an Office action, and where petitioner would have entered the receipt date of the Office action if petitioner received it (for example, a copy of the outside of a file or a calendar maintained by petitioner), if these documents are available;

(4) a statement from the petitioner, or any other person at the address who may have handled the Office action, indicating that a search was conducted of the location where the correspondence from the USPTO would have been kept; however, the Office action was not found; and

(5) a statement that petitioner was, in fact, residing at (or routinely checked) the correspondence address of record for a reasonable time after the mailing date of an Office action (that is, the period when the Office action would have been received).

Fees:

No fee is required for filing a petition requesting withdrawal of abandonment based on failure to receive an office action.